PTAB

IPR2021-00371

Group III Intl Inc v. Targus Group Intl Inc

Log In
Key Events
Petition

1. Case Identification

2. Patent Overview

  • Title: Portable Computer Case
  • Brief Description: The ’578 patent discloses a "checkpoint friendly" portable computer case designed to be scanned at airport security without removing the computer. The case features a bi-fold design that opens to lie flat on a conveyor belt, with one section dedicated solely to the computer to allow for an unobstructed X-ray image, while a separate section holds accessories.

3. Grounds for Unpatentability

Ground 1: Anticipation of Claims 1-4, 17-19, 21-22, 28-31, 42, and 47-57 under §102 by Hollingsworth

  • Prior Art Relied Upon: Hollingsworth (Patent 6,213,266).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Hollingsworth, which discloses a modular luggage system with a wheeled flight bag and a demountable computer carrying case, teaches every element of the challenged claims. Hollingsworth’s computer case is a bi-fold container with a first storage section for personal items (including a first and third pouch) and a second storage section sized to hold only a laptop. The sections are joined by a zipper that functions as a hinge, allowing the case to be opened and laid flat for scanning, mirroring the core functionality of the ’578 patent.
    • Key Aspects: The central assertion was that Hollingsworth’s detailed description of a multi-pouch accessory section opposite a dedicated computer section in a foldable case met all limitations of independent claim 1, which served as the foundation for the majority of the challenged claims.

Ground 2: Obviousness of Claims 5-6, 27, 31-33, 43-44, and 46 under §103 over Hollingsworth in view of Moor

  • Prior Art Relied Upon: Hollingsworth (Patent 6,213,266) and Moor (Patent 5,706,992).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted that to the extent Hollingsworth does not explicitly teach certain dependent claim limitations, these features were well-known in the art as taught by Moor. Hollingsworth provides the primary bi-fold, checkpoint-style case. Moor, which discloses a backpack for carrying a computer, teaches using a "see-through storage compartment" made of mesh (as required by claim 5) and a "flexible strap" to secure the laptop within its compartment (as required by claim 27). Moor also teaches the use of shoulder straps for a backpack configuration (claim 43).
    • Motivation to Combine: A Person of Ordinary Skill in the Art (POSITA) would combine Moor’s features into Hollingsworth’s design to achieve predictable functional improvements. For example, adding a mesh pocket would allow a user to easily see its contents, and adding a retention strap would better secure the computer against movement—both common and desirable features in any carrying case.
    • Expectation of Success: The combination involved applying conventional elements (mesh pockets, straps, handles) to a known bag design. A POSITA would have had a high expectation of success as it required only the application of standard design principles.

Ground 3: Obviousness of Claims 1-6, 12-14, 17-19, 21-24, 27-33, 38-39, 42-44, 46-51, 53, and 57 under §103 over the TSA RFI in view of Moor and Hollingsworth

  • Prior Art Relied Upon: The TSA RFI (a March 3, 2008 TSA Solicitation), Hollingsworth (Patent 6,213,266), and Moor (Patent 5,706,992).

  • Core Argument for this Ground:

    • Prior Art Mapping: Petitioner argued that the TSA Request for Information (RFI), published before the patent’s priority date, provided a detailed blueprint for the claimed invention. The TSA RFI explicitly requested designs for "Checkpoint Friendly" bags that would "open completely so that each side of the bag would lie horizontally on the x-ray belt" with one side designed "to hold the laptop and nothing else." Hollingsworth and Moor provided the well-known, off-the-shelf components (e.g., bi-fold structures, multiple pouches, fasteners, straps) that a POSITA would use to construct a bag meeting the TSA RFI’s specifications.
    • Motivation to Combine: The motivation was exceptionally strong, as the TSA RFI created a clear market need and provided specific performance criteria for a new type of computer bag. A POSITA would have been directly motivated to combine existing bag features as found in Hollingsworth and Moor to create a product that complied with the TSA guidelines.
    • Expectation of Success: Success was practically assured because the challenge was not to invent a new concept, but to assemble known components in a manner explicitly requested by a government agency. The combination was merely the implementation of a detailed public request using conventional technology.

  • Additional Grounds: Petitioner asserted anticipation of claims 1-3, 12, 17-18, 21-22, 28-30, 42, 48-51, 53, and 57 over Miller (Patent 6,213,267) and obviousness of claims 13-14, 23-24, and 38-39 over Hollingsworth in view of Tropp (Patent 7,036,728), which taught adding visual indicia to luggage.

4. Key Claim Construction Positions

  • "configured to enable a scanning device to scan through": Petitioner argued this term, based on the patent’s prosecution history, means "a non-metallic material that allows energy from any scanning device of any kind to at least partially pass through material." This construction was used to argue that prior art cases made of standard luggage fabrics inherently meet the limitation.
  • "inner side": Petitioner proposed this term means "any surface located within a case, including a surface opposite an outer side on the same panel as the outer side." This broad construction was intended to encompass various prior art pocket and compartment configurations.

5. Arguments Regarding Discretionary Denial

  • Petitioner noted that co-pending district court litigation was in the early stages. It was argued that no depositions had been taken and no Markman hearings had occurred, meaning an IPR would be an efficient alternative to litigation and would not result in significant duplication of effort or the risk of inconsistent rulings, weighing against a discretionary denial under Fintiv.

6. Relief Requested

  • Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6, 12-14, 17-19, 21-24, 27-33, 38-39, and 42-57 of the ’578 patent as unpatentable.